DETAILED ACTION
Allowable Subject Matter
The indicated allowability of claims 8-20 is withdrawn in view of the newly discovered reference(s) to Goss et al. (US 2005/0058378). Rejections based on the newly cited reference(s) follow.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
Claims 8, 10-15, 17, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goss et al. (US 2005/0058378).
In Re claim 8 and 17, Goss et al. disclose a pre-loaded assembly (bearing assembly 10) and associated method of use, comprising: providing a first and second mating parts (32, 34, 42) positioned along an axis (A-A); providing an annular cantilever beam spring (38) positioned between the mating parts; and providing a preload mechanism (see par. 0019 and 0024) configured to compress the spring and apply a preload to the assembly (par. 0024), wherein the annular cantilever beam spring comprises: a flat annular beam (central flat portion of 38); a first set of N protrusions greater than 3 (see raised protrusions in figs. 2 and 6) spaced evenly about the spring; a second set of N stand-offs (see bottom of 38 in fig. 6) spaced evenly about the spring and offset from the protrusions, wherein the preload creates a curvature to the spring (wave; par. 0024).
In Re claim 9, see protrusions in 38 in figs. 2 and 6.
In Re claims 11 and 20, the spring functions in the same fashion as applicant’s invention.
In Re claim 12, Goss et al. disclose the use of “high strength steel or various other materials” (par. 0023).
In Re claims 13 and 19, see par. 0024 regarding inducing a wave shape to the spring.
In Re claim 14, see Abstract.
In Re claim 15, see dual bearing races (32, 34).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 10 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Goss et al. (US 2005/0058378).
In Re claims 10 and 18, Goss et al. show 8 protrusions spaced at 45 degrees; but fail to disclose exactly 3 protrusions. The examiner asserts that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the spring to have any number of functional protrusions, as a matter of engineering design choice, simply to changes the spring characteristics resulting in a larger/smaller preload. The examiner further notes that it has been held that where the general conditions of a claim are taught by the prior art, a mere change in the number of the essential working parts of a device involves only routine skill in the art (MPEP2144.04).
Allowable Subject Matter
Claim 16 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS W IRVIN whose telephone number is (571)270-3095. The examiner can normally be reached Monday - Friday 9am - 5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Siconolfi can be reached at 571-272-7124. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/THOMAS W IRVIN/ Primary Examiner, Art Unit 3616
